Ex Parte WU et al

Patent Trial and Appeal Board

Jan 24, 2018

13687492 (P.T.A.B. Jan. 24, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/687,492 11/28/2012 Jiann Lih WU T5057-826 1175
95496 7590 01/26/2018
Hauptman Ham, LLP (TSMC)
2318 Mill Road
Suite 1400
Alexandria, VA 22314
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
01/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tsmc@ipfirm.com
sramunto @ ipfirm.com
pair_lhhb @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANN LIH WU, JENG-JYI HWANG, SOON-KANG HUANG,
and CHI-MING YANG
Appeal 2017-002234
Application 13/687,492
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jiann Lih Wu et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 1, 4—8,
10-14, 17, and 20 as anticipated by Yilmaz (US 2009/0305610 Al,
published Dec. 10, 2009) and to reject under 35 U.S.C. § 103(a): (1) claims
2, 3, 15, 16, 18, and 19 as unpatentable over Yilmaz; and (2) claim 9 as
unpatentable over Yilmaz and Birang (US 7,001,242 B2, issued Feb. 21,
2006). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2017-002234
Application 13/687,492
CLAIMED SUBJECT MATTER
The claimed subject matter relates to wafer polishing systems and a
wafer polishing method. Spec. 53—55, Figs. 2, 3A—3E. Claims 1,11, and
17 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A wafer polishing system comprising:
a platen configured to rotate in a first direction;
a polishing head configured to hold a wafer, the polishing
head configured to rotate in a second direction; and
an end point sensing system configured to detect a
thickness of the wafer at a first location on the platen and at a
second location on the platen,
wherein a first distance from a center of the platen to the
first location is different than a second distance from the center
of the platen to the second location.
ANALYSIS
Anticipation by Yilmaz
Claims 1, 4—8, and 10
Appellants do not offer arguments in favor of dependent claims 4—8
and 10 separate from those presented for independent claim 1. See Appeal
Br. 7—11. We select claim 1 as the representative claim, and claims 4—8 and
10 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that “element(210) in Yilmaz” is “the polishing
pad, which overlies the platen” and that the “polishing heads in Yilmaz . . .
are clearly labelled elements(230A) or (230B), and hold the
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Application 13/687,492
wafers(215A)(215B) respectively.” Final Act. 3.1 The Examiner further
finds that:
the polishing heads in [Yilmaz] are shown as being capable of
rotation in both clockwise and counterclockwise directions, as
shown in figure 2, such that the platen would, at least in some
instances, be rotating in an opposite sense to that of the polishing
head. Thus, the limitation is deemed to be inherently suggested
by the reference.
Id. at 4.
Appellants contend that “the Examiner’s position appears to be that
elements 230A and 23OB and element 220 could rotate in opposite
directions” and as indicated in Appellants’ annotated version of Figure 2 of
Yilmaz, “the graphical indication for rotation for elements 230A and 230B
in Figure 2 is the same as the graphical indication for rotation of element
220.” Appeal Br. 9.2 As such, Appellants conclude that “Figure 2 [of
Yilmaz] fails to provide any evidence of an actual situation where element
220 rotates in an opposite direction from elements 230A and 230B.” Id.
Appellants further contend that:
[t]he Examiner’s logic is based on an assumption that element
220 does not rotate clockwise when elements 230A and 23 0B
rotate clockwise; and that element 220 does not rotate
counterclockwise when elements 230A and 23 0B rotate
counterclockwise. This assumption is not inherently supported
by Yilmaz. The Examiner’s position is based on a mere
possibility instead of inherency.... Here, the Examiner is relying
on a situation which may occur, not a situation which is required
to occur. . . . Thus, the assertion by the Examiner cannot
reasonably establish a case of anticipation.
1 Final Office Action (hereinafter “Final Act.”) (dated Dec. 30, 2015).
2 Appeal Brief (hereinafter “Appeal Br.”) (filed May 23, 2016).
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Application 13/687,492
Id. at 9-10.
In this case, the Examiner does not direct us to any discussion in
Yilmaz that the “platen” (“polishing pad”) rotates in a direction opposite
from the “polishing head.” See Final Act. 4; see also Ans. 4—53; Advisory
Act. 24; Yilmaz, Fig. 2; Appeal Br. 8 (“The Examiner failed to provide
evidence of any point situation required by Yilmaz where the rotation
direction of elements 230A and 230B is actually different from the rotation
direction of element 220.”). Appellants correctly note that in figure 2 of
Yilmaz “[t]he indication of a direction of rotation for the asserted platen is
the same as the direction of rotation for the asserted polishing head.”
Appeal Br. 9 (referring to Appellants’ annotated version of Yilmaz’s Figure
2). Consequently, we agree with Appellants that Figure 2 of Yilmaz fails to
illustrate a “situation where element 220 rotates in an opposite direction
from elements 230A and 230B.” Appeal Br. 9.
We acknowledge that Yilmaz’s disclosure of “the use of a double
arrow for each of the polishing heads [] and for the polishing pad,” as
illustrated in Figure 2, is indicative of the polishing heads and the polishing
pad “being capable of rotation in both clockwise and counterclockwise
directions.” See Final Act. 4; see also Ans. 4—5; Advisory Act. 2. Merely
that the polishing heads and the polishing pad illustrated in Figure 2 of
Yilmaz are “capable of rotation in both clockwise and counterclockwise
directions” does not necessarily mean that the “platen” (“polishing pad”)
inherently rotates, even in “some instances,” in a direction opposite from the
3 Examiner’s Answer (hereinafter “Ans.”) (dated Sept. 30, 2016).
4 Advisory Action (hereinafter “Advisory Act.”) (dated Feb. 29, 2016).
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Application 13/687,492
“polishing head.” See Final Act. 4; see also Ans. 4—5; Advisory Act. 2.5
Here, we agree with Appellants that the Examiner fails “to provide any
evidence, beyond a mere assertion, that the directions of rotation for element
220 and elements 230A and 230B are different.” Appeal Br. 10.
“Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(internal quotations and citations omitted).
The Examiner proposes alternative findings in the Answer. In
particular, the Examiner finds that:
Appellants are] reading limitations into the claims that simply
are not present. Each of the independent claims recite the
polishing head rotating in a first direction, and the polishing pad
rotating in a second direction. A careful review of Appellants’]
specification at paragraph (0016) reveals that these directions
may indeed be the same direction. Thus the terms “first” and
“second” in Appellants’] claims in no way imply “opposite”,
and clearly Appellants’] specification explicitly states that they
need not be.
Ans. 4.
Appellants contend that the Examiner’s findings “constitute^ a new
interpretation of the claim language not previously asserted by the Examiner
during prosecution” and “the Examiner should re-open [the subject]
application and issue a new Office Action directed to this interpretation.”
5 The Examiner cites to Sekiya (US 2002/0173244 Al, published Nov. 21,
2002) merely to show that the “use of opposite directions for polishing head
and polishing pad, is old and well-known in the [chemical mechanical
polishing] art.” Ans. 4; see also Final Act. 3 (citing Sekiya 111).
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Application 13/687,492
Reply Br. 4.6 However, the Examiner’s failure to follow proper procedure
in presenting a new ground of rejection is a petitionable matter, which was
rendered moot by Appellants filing the instant Reply Brief. MPEP
§ 1207.03.
Appellants contend that “even using this newly asserted interpretation
the Examiner’s arguments still fall short of the requirements for a proper
anticipation rejection” in that “[t]he Examiner continues to rely on
information which is neither explicit nor inherent within the Yilmaz
reference.” Reply Br. 4.
As an initial matter, we agree with the Examiner that claim 1 does not
require that the “first” direction and the “second” direction be “opposite”
directions. Ans. 4; In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Limitations not appearing in the claims cannot be relied upon for
patentability). Claims are given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad, of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Appellants’ Specification describes that
“[i]n some embodiments, the second direction is the same as the first
direction.” Spec. 116 (emphasis added); see also Ans. 4. Under the
broadest reasonable interpretation consistent with the Specification, the
Examiner’s determination that the polishing head rotating in “a first
direction” and the polishing pad rotating in “a second direction” can be
interpreted to mean that the polishing head and the polishing pad are rotating
in the “same direction” is reasonable. Ans. 4. Appellants do not apprise us
of Examiner error. Moreover, Appellants acknowledge that in Figure 2 of
6 Reply Brief (hereinafter “Reply Br.”) (filed Nov. 29, 2016).
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Application 13/687,492
Yilmaz “[t]he indication of a direction of rotation for the asserted platen is
the same as the direction of rotation for the asserted polishing head.”
Appeal Br. 9 (referring to Appellants’ annotated version of Yilmaz’s Figure
2).
Appellants contend that “the Examiner failed to address each and
every element recited in the claim language of all of the rejected claims.”
Reply Br. 6. However, Appellants have not apprised us of the particular
recited elements lacking in the Examiner’s rejection.
Accordingly, based on the foregoing reasons, we sustain the
Examiner’s rejection of independent claim 1 as anticipated by Yilmaz. We
further sustain the rejection of claims 4—8 and 10, which fall with claim 1.
Claim 11
Appellants do not offer arguments in favor of independent claim 11
separate from those presented for independent claim 1. See Appeal Br. 11
(“Claim 11 recites ‘rotating the polishing head in a first direction; rotating a
platen in a second direction.’ The Examiner erred in rejecting claim 11 for
reasons analogous to those set forth above with respect to claim 1.”). As
discussed above, Appellants’ arguments regarding claim 1 are not
persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
likewise sustain the Examiner’s rejection of claim 11 as anticipated by
Yilmaz.
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Application 13/687,492
Claims 12—14
Appellants do not offer arguments in favor of dependent claims 12—14
separate from those presented for independent claim 11. See Appeal Br. 11
(“Claims 12-14 depend from claim 11, recite additional features and the
Examiner erred in rejecting these claims for at least the reasons set forth
above with respect to claim 11 and/or for the additional features.”). As
discussed above, Appellants’ arguments regarding claims 1 and 11 are not
persuasive. Further, Appellants do not apprise us of the “additional
features” lacking in the Examiner’s rejection.
Accordingly, for the same reasons discussed above for claims 1 and
11, we likewise sustain the Examiner’s rejection of claims 12—14 as
anticipated by Yilmaz.
Claim 17
Appellants do not offer arguments in favor of independent claim 17
separate from those presented for independent claim 1. See Appeal Br. 11
(“Claim 17 recites ‘a polishing head configured to move in a direction
perpendicular to a surface of the platen in response to the pressure
adjustment signal.’ The Examiner erred in rejecting claim 17for [sic]
reasons analogous to those set forth above with respect to claim 1.”). As
discussed above, Appellants’ arguments regarding claim 1 are not
persuasive.
Accordingly, for the same reasons discussed above for claim 1, we
likewise sustain the Examiner’s rejection of claim 17 as anticipated by
Yilmaz.
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Application 13/687,492
Claim 20
Appellants do not offer arguments in favor of dependent claim 20
separate from those presented for independent claim 17. See Appeal Br. 12
(“Claim 20 depends from claim 17, recites additional features and the
Examiner erred in rejecting this claim for at least the reasons set forth
above with respect to claim 17 and/or the additional features recited.”). As
discussed above, Appellants’ arguments regarding claims 1 and 17 are not
persuasive. Further, Appellants do not apprise us of the “additional
features” lacking in the Examiner’s rejection.
Accordingly, for the same reasons discussed above for claims 1 and
17, we likewise sustain the Examiner’s rejection of claim 20 as anticipated
by Yilmaz.
Obviousness over Yilmaz
Claims 2, 3, 15, 16, 18, and 19
Regarding claims 2, 3, 15, 16, 18, and 19, the Examiner finds that “the
exact ranges of locations on the platen at which the measurements are taken
are seen as obvious matters of design choice arrived at by routine
experimentation on the part of those of ordinary skill in the art.” See Final
Act. 2—3; Ans. 5.
We are not persuaded that achieving the claimed distance ranges
would have been an obvious matter of design choice arrived at by routine
experimentation, as the Examiner proposes. A particular parameter must be
recognized as a result-effective variable, i.e., a variable that achieves a
recognized result, to characterize that variable’s optimization as routine
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Application 13/687,492
experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). The
Examiner does not provide evidence that the claimed distance ranges are so
recognized. See Final Act. 2—3; see also Ans. 5; Appeal Br. 12—13; Reply
Br. 7. Additionally, we agree with Appellants that the Examiner fails “to
provide any evidence to support the assertion that ‘ [Yilmaz] is cognizant of
the spacing of the windows in the various embodiments’ in reaching the
conclusion that the recited measurements are the results of obvious
optimizations.” Reply Br. 7; see also Ans. 5.
Accordingly, we do not sustain the Examiner’s rejection of claims 2,
3, 15, 16, 18, and 19 as unpatentable over Yilmaz.
Obviousness over Yilmaz and Birang
Claim 9
Appellants contend that, “[ajssuming arguendo that Birang is properly
combined with Yilmaz, Birang fails to teach or suggest ‘a polishing head
configured to hold a wafer, the polishing head configured to rotate in a
second direction.’ Thus, Birang fails to cure the deficiencies of Yilmaz.”
Appeal Br. 16; see also Reply Br. 8.
Claim 9 depends from claim 1. As we find no deficiencies in the
Examiner’s rejection of independent claim 1 as anticipated by Yilmaz for the
reasons discussed above, we likewise sustain the Examiner’s rejection of
claim 9 as unpatentable over Yilmaz and Birang.
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Appeal 2017-002234
Application 13/687,492
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 4—8, 10—
14, 17, and 20 anticipated by Yilmaz.
We REVERSE the decision of the Examiner to reject claims 2, 3, 15,
16, 18, and 19 as unpatentable over Yilmaz.
We AFFIRM the decision of the Examiner to reject claim 9 as
unpatentable over Yilmaz and Birang.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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